This little blog is a way to keep track of useful, specific patent information in this rapidly changing world. It's not actual legal advice, however. Use at your own risk.

Thursday, July 31, 2008

Examiner misses claim elements, whole claims

Finality of the Next Action Is PrecludedApplicants note the Office Action does not specifically reject the core feature of independent claim 1 . Indeed, although the Summary of the Office Action indicates that claim 1 stands rejected, the Detailed Action omits any explanation of how any cited art anticipates the core feature “via application of the one or more subtractive filters, determining intersection of the associated sets of user interface element definitions as a display set of user interface element definitions….” of this claim. Applicants respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicants. Consequently, a next Office action rejecting claim 1 cannot properly be made final since only then would the Applicant be obligated to rebut the rejection, presuming that such an Office action sets forth a prima facie case. (See MPEP § 706.07(a)).